Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Monday, 31 March 2014

While in theory every piece of intellectual property litigation has a winner and a loser, from time time to time one spots a case that seems to leave everyone worse off. Mensah (trading as 37 Days 3 Hours 9 Minutes Creative) v Darroch & Others [2014] EWHC 692 (QB) is such a case, this being a 19 March 2014 ruling from Mr Justice Tugendhat, sitting in the Queen's Bench Division of the High Court, England and Wales. It definitely seems to fit the bill of a sad little case that produce no winners, no happiness and no satisfaction.

Mensah approached Darroch -- the Chief Executive Officer of BSkyB since 2007 -- in 2011 and offered him two commercial business proposals for TV shows, entitled "Duets" and "Seven" respectively. "Duets" was described as a singing-and-dating game show, while "Seven" was a game show based on luck. Darroch decided not to take Mensah's proposals further. However, Mensah claimed that Darroch and his colleagues subsequently combined his two proposals and then fraudulently misrepresented themselves as their originators by launching a show known as "Sing Date". Mensah added that he had approached other broadcasting companies with the proposals but that they had been rejected on the ground of similarity to "Sing Date".

In an action in which he represented himself, Mensah sought legal relief through a claim for deceit, fraudulent misrepresentation, breach of fiduciary duty and breach of confidence, basing his claims on an alleged failure by one of Darroch's chief executive officers to investigate the pleaded misconduct. According to Mensah, the individual and corporate defendants had links with one another and had conspired to injure him. Darroch denied any breach of fiduciary duty and adduced evidence that "Sing Date" had been in the process of development ever since 2009. What's more, he said, the only element "Sing Date" shared with Duets was that both involved singing and dating -- a general idea that could not, of itself, be protected in law. After issuing the claim form, Mensah made applications for a data forensic expert to verify Darroch's emails and for access to the defendants' servers. At this point Darroch and the other defendants sought an order that Mensah's action be struck out because there was no factual basis upon which it might succeed.

Tugendhat J struck out Mensah's action and indeed went somewhat further to protect the defendants from what he saw as an entirely unfounded action. In his view:

* Mensah's case, as pleaded, lacked the material facts on which serious allegations of dishonesty and conspiracy might be based,since it was essentially that "Sing Date" so closely resembled "Duet" and "Seven" that the court should infer from that fact alone that those who developed "Sing Date" used information provided by him;

* Mensah had however made no serious attempt to set out the alleged similarities. Indeed, the terms in which he described "Seven" actually contradicted any claim to similarity with "Sing Date".

* Since on the facts there was no case which Mensah could plead which would have a real prospect of success, his claim had to be struck out in its entirety.

* There being unanswerable evidence that there was no foundation for Mensah's speculative claims, and since he persisted in pursuing serious allegations of dishonesty, it was appropriate to make a civil restraint order to stop him bringing further proceedings for a period of two years.

Life can be tough forlitigants in person ...

The IPKat is always sad when these cases come to court, since the thwarted claimant carries a passionate conviction, which nothing can shift, that he or she is the author, creator or originator of an idea that has subsequently become a successful programme; to this conviction is added a further layer of belief that the legal system has victimised them or treated them unjustly. Worst of all, IP gets a hammering too: the system is seen as being insufficiently sensitive to the nuances of creativity that lurk beneath the easily definable levels of patents, copyright, designs and trade marks.

The nine defendants engaged three firms of solicitors and two barristers between them in order to defend against claims which had not a snowball in hell's chance of success: Merpel wonders whether there might have been a cheaper option. Would it have been possible to persuade Mensah to accept a small sum and a pat on the back, on a without-prejudice basis, go drop the action and consider himself the show's originator? Given his persistence it is improbable that he would have lightly accepted such a face-saving gesture.

The clocks went
forward in the UK this weekend which means Spring is in the air, and so is the
new era of domain name domination (discussed here). The race is officially
on for big brands to register their interest in new generic top level domain
names (gTLDs). To remind readers who are new to the subject: a top-level
domain is the part of an Internet address that appears to the right of the last
period, for example ‘.co.uk’. A generic top-level domain is a
top-level domain that is not a geographic or national designation (for example,
".com", ".org" and ".net" are all examples of
historic gTLDs). On June 20, 2011, the Internet Corporation for Assigned Names and Number’s(“ICANN”) board
voted to end most restrictions on the generic top-level domain names (gTLD)
from the 22 that were available at the time (including the few just mentioned),
which meant that companies and orgainisations would be able to chose essentially
arbitrary TLD’s.According
to ICANN, Over 1,300 new names or "strings" could become
available in the next few years, and in the past few months, names such as
‘.London’, ‘.Christmas.’ and ‘.dating’ have been introduced into the Internet's
authoritative database (see most up to date list of names here).

However, as companies rush to
register their interest in specific names (and we hereby reserve ipkat.milk),
this proliferation of new domain names does come with inherent risks.

Last month, ICANN’s Trademark Clearinghouse observed
that domain name abuse is at risk of rising significantly -- and some of the
UK’s biggest companies could face danger if they fail to protect their
intellectual property, with third parties already seeking to register many
domain names relating to British brands' rights.

According to the Telegraph,
Trademark Clearinghouse’s data has shown that unknown third party entities have
already pre-reserved their interest in registering the domain names of 80 per
cent of the UK’s 50 most valuable brand names under the .web domain at websites
such as www.1and1.comwhich offer a
pre-reservation service for the latest generation of gTLDs. Likewise, third parties have attempted to pre-order
78 per cent of the UK’s top 50 most valuable brands under the .online domain,
72 per cent under .app, 70 per cent under .shop and 68 per cent under .blog. It was
stated that brands in the food grocery space were most notable in this regard,
with tesco.co, asda.org, sainsburys.info, morrisons.org all found to be under
the control of an unofficial party.

“Although
the new gTLD programme is set to enhance competition, innovation, and consumer
choice on the Internet,our research shows that some of the UK’s
biggest brand names are at risk of IP infringement online as new gTLDs are
rolled out - with other parties keen to capitalise on the traffic and illegitimate
opportunities a branded website will generate. This potentially compromises the
reputation of each brand targeted.”

There have
already been a variety of disputes in the domain name world in recent years. In
Michael Toth vEmirates[2011] EWPCC 18, 13 June 2011.),Michael Toth had registered the domain name emirates.co.uk viaNominet, the UK registry for domain names; Emirates (an airline based in Dubai)
used Nominet's Domain Registration Service to contend that it was an abusive
registration. Nominet's appeal panel concluded that the registration was
abusive and should be transferred to Emirates. Mr. Toth applied to the Patents
County Court (now relaunched as the Intellectual Property Enterprise Court) for various
declarations, including a declaration that the registration was not abusive.
Emirates applied to strike out Mr Toth's claim. In the end, the court
decided to strike out Mr Toth’s claim and the domain name was transferred to
Emirates.

However, disputes have started to arise
even more recently since the release of the new gTLD’s. News comes via Dreyfus (see full article here) which stated on February 5, 2014,
the domain name ’canyon.bike’ was registered anonymously with Godaddy.com, a
registrar company, and German company Canyon Bicycles GmbH responded quickly by
filing a Uniform Domain-Name Dispute-Resolution Policy (usually referred to as
“UDRP”) complaint. The complaint was
dealt with by WIPO who, although they don’t usually take into consideration TLD
suffixes such as .fr, decided this case was relevant as the gTLD in question
described "a core product of the Complainant”, namely bikes. The Panel found
that ’given the advent of multiple new gTLD domain names, panels may determine
that it is appropriate to include consideration of the top-level suffix of a
domain name for the purpose of the assessment of identity or similarity in a
given case, and indeed that there is nothing in the wording of the Policy that
would preclude such an approach.’

Time to protect your brand!

However, it
is not all bad news for brands as they are able to protect themselves further
by registering their domain name with ICANN’s Trademark Clearinghouse as, once
it is registered, the Clearinghouse will then issue a warning ahead of any
potential infringement. It costs £92 to record a trademark
for a year, £267 for three years, and £446 for five years.

Yet if brands do fail to protect
themselves and prevent third parties from registering domains relating to their
trade marks, it will follow that consumers are also put at risk by
inadvertently buying products from the black market and visiting bogus websites
which possible contain malware, as a result of third parties posing as these
brands online.

The court first established that the trade mark registration had to be classified as a shape mark and not as a colour mark. Having established this, the court then examined whether one of the exclusions for registrability of shape marks applied. Based on the documents presented by the defendants, it found that the red sole gave the shoes their substantial value, and that the trade mark had to be declared invalid as a consequence.

Then the court then stated obiter that, since the trade mark was a shape mark, it had to be analysed whether the shape significantly departed from the norm of the sector so that it could serve as an indication of origin of the goods in question. Van Dalen Footwear had however shown many examples of shoes with a red sole, but which did not originate from Louboutin. On this basis, the court concluded that the red sole was a common shape on the market and did not significantly depart from the norm of the sector. It therefore lacked distinctive character.

The court of Brussels hereby explicitly departed from an earlier decision of OHIM’s Second Board of Appeal, which had classified the Louboutin mark as fanciful and unexpected. According to the Brussels court, the defendants had however established that the red sole was at least common.

This Kat suspects that we have not seen the end of the famous red sole, regardless of whether it is classified as a shape mark, a colour mark, a position mark or anything else: there's simply too much money at stake. Merpel notes that this ruling and that of the OHIM Second Board of Appeal are not necessarily contradictory, even if they reach opposite conclusions: the degree of flexibility open to courts in Europe is vast, despite two decades of rampant harmonisation. The Community trade mark system is autonomous, as OHIM, the General Court and the Court of Justice never tire of telling us, and consumers at national or regional level, with different perspective, customs and linguistic backgrounds, are quite capable of seeing all manner of marks in different ways as soon as a border has been crossed.

Getting ready for #HappyKat. Tomorrow's the day that the IPKat's exciting afternoon seminar, "Online Copyright + Enforcement = Happiness?", masterminded by Eleonora, takes place at the lovely London premises of law firm Bristows LLP, beginning with registration (1.30 pm till 2 pm). You can check the programme out here. There's a change in the line-up since the event was first announced. Sadly Asim Singh can't be with us, but "Life (and death) of HADOPI in France?" is now in the safe hands of Brigitte Lindner. There are FIVE CPD points for those lucky folk who attend. Others won't miss out on all the excitement, though, since Bristows LLP has kindly agreed to arrange for live streaming. To listen to the event as it happens, while watching the speakers' PowerPoints, click here. The Kats also have a special hashtag for the event, #HappyKat, if you're in the mood to tweet ...

Meet the Bloggers 2014. If you are in Hong Kong during the week of the International Trademark Association's meeting this coming May, don't forget to attend the 10th annual Meet the Bloggers reception on Monday 12 May, between 8 pm and 10 pm at the Royal Hong Kong Yacht Club. Kindly hosted by the local office of Marks & Clerk, this event will give you a chance to meet some of IP's blogging legends in the flesh, if you can face the prospect, and of watching bloggers at first hand when they are not actually blogging about IP but just being ordinary people. Satisfaction guaranteed. See you there!

I do declare! This Kat is embarrassed to confess that, in all his IP-related reading and news-gathering, he somehow missed the latest news relating to the Joint Declaration to Protect Wine Place Names & Origin, which was signed in Napa Valley on 26 July 2005 and which he hasn't mentioned since Cat the Kat's post back in October 2011. Recent news is that the list of signatories, which includes such distinguished names as Champagne, Chianti Classico, Jerez-Xérès-Sherry, Long Island, Napa Valley, Oregon, Paso Robles, Porto, Rioja, Sonoma County, Victoria, Tokaj, Walla Walla Valley, Washington state, Willamette Valley and Western Australia, has now been augmented by the American wine region of Santa Barbara County, California, and French wine regions Bordeaux and Bourgogne/Chablis. The Declaration represents the aspirations of "a global movement aimed at ensuring wine place names are protected and not abused or miscommunicated to consumers", though after several glasses of the protected substances it can be difficult to say some of these names at all, let alone miscommunicate them.

Around the weblogs. The MARQUES Class 46 weblog reminds readers of the impending excitements of World Intellectual Property Day on 26 April. This year's theme sounds very copyright-ish, since it's on the theme of "Movies: a Global Passion". MARQUES's view, however, is that the movies have much to commend themselves to the branding industries, both because of the lucrative nature of merchandising tie-ups and because of the prospects which movies offer for spot-on marketing through product placement. Elsewhere on the IP blogosphere, it's a little quiet. This Kat has been so busy of late that he hasn't had a chance to write up his thoughts on the final version of the EU Tech Transfer Block Exemption Regulation, but in the meantime he commends readers to the piece on that topic by Mark Anderson on IP Draughts, here.

Time to party! As the IPKat reported not so long ago, the Intellectual Property Ball Trainees Ball is usually an annual event. Being quite non-discriminatory in its scope, the Ball is aimed at intellectual property trainees -- irrespective of whether they be trade mark attorneys, patent attorneys, IP solicitors or any other trainee in the profession. Since there was no Ball last year, the organisers emphasise that are extending the invitation even to recently qualified folk who didn’t get the chance to attend last year. This Kat, whose ability to read fancy fonts has not improved with time or with the provision of a new and enhanced set of spectacles, can confirm that the date of this event is 19 July and that, as yet, the organisers do not appear to have secured any award of CPD points for recently-qualified party-goers (though there may be other compensations). The invitation is on the right. If your eyesight is really good you can read the accompanying link; if not, all you have to do is zoom your page until you can, or trust this Kat that it's tinyurl.com/iptball2014, all of which sounds quite plausible. The price per ticket is £99, so if you are going you'd jolly well better make sure that you're getting your money's-worth of pleasure ...

Saturday, 29 March 2014

As reported by the IPKat, two days ago UK
Government issued the draft regulations that, if approved by resolution of each
House of the Parliament, will import new exceptions into UK copyright law with
effect as of 1 June 2014.

Among other things, from that date also UK will finally
have a specific exception for caricature, parody and
pastiche.

When this Kat arrived in the UK a few years ago to
pursue her LLM studies she was frankly quite shocked [or,
rather ... amused] to discover that a country famed
for many beautiful things - including its weather and sense of humour - lacked
an exception to copyright that would actually permit all those humour-related
activities such as caricature, parody and pastiche.

As explained in the Guidance for those using copyright works to create new
content, parody
imitates a work for humorous or satirical effect, commenting on the
original work, its subject, author, style, or some other target. Pastiche
is a musical or other composition made up of selections from various
sources or one that imitates the style of another artist or period. A
caricature portrays its subject in a simplified or exaggerated way, which
may be insulting or complimentary and may serve a political purpose or be
solely for entertainment.

The latterobserved that the InfoSoc Directive does not require to frame this exception within fair dealing. However, UK Government decided not to go for an "unlimited" [but no exception would be "unlimited", as it must comply with the three-step test ex Article 5(5) of the InfoSoc Directive] exception, but rather refer to the need for a fair dealing with the original work, so to minimise the potential harm to relevant copyright owners.

Among other things, new Section 30A of the Copyright Designs and
Patents Act 1988 ('CDPA') will provide that "[f]air dealing with a work for the purposes of caricature, parody or
pastiche does not infringe copyright in the work."

Also following an email exchange with
Katfriend Robin Fry (DAC Beachcroft), the question that has arisen is: How far
reaching will this new exception be?

Not much, it would seem.

The original Hangover Part II poster

Dealing must be fair

First of all, the
law is changing to allow people to use limited [fair]amounts
of another’s material without the owner’s permission. The same Guidance mentioned
above provides the following examples: a comedian may use a few lines from
a film or song for a parody sketch; a cartoonist may reference a well
known artwork or illustration for a caricature; an artist may use small
fragments from a range of films to compose a larger pastiche artwork.

Overall - still according to the Guidance - fair dealing only allows you to make use
of a limited, moderate amount of someone else’s work. This means that any
dealing that is not fair will still require a licence or permission from
the copyright owner. [update: just to clarify: the issue of whether the defence may apply only arises when the taking has been substantial]

This might be fine for - say - a literary work, but how effective would be a parody of an artistic work that did not reproduce a substantial part - if not the whole - of it?

... and its LEGO version:would the dealing be considered fair under the new UK exception?

This Kat reverted to the most precious book in her own personal library, ie Patry on Fair Use, to see what the
long-established US experience in addressing issues of parody & fair use
tells us in this respect. She read that:

"Qualification
for consideration as a parody does not address how much of the original the
parodist may fairly appropriate ... However, in light of their need to ensure
that the public recognizes that the original is being parodied, the courts have
recognized that parodies 'frequently need [] to be more than a fleeting
evocation of an original in order to make [their] humorous point.'"

This great book further explains that what use of an original work can
be considered fair is a fact-specific assessment. However, "[w]hile a parodist should not be entitled to make the best parody possible if that involves copying beyond an amount necessary for the public to appreciate the parody, the public also loses if only mediocre parodies can qualify as fair use."

In the UK leading commentary Copinger & Skone on Copyrightobserves that, "[a]s parody
depends upon recognition of the work being parodied, the substantial part
requirement will sometimes be satisfied" [Section16(3) CDPA states that copyright is infringed by the doing of any act restricted by the copyright in relation
to the work as a whole or any substantial part of it, either directly or
indirectly].

At my signal, unleash integrity?

If we look at the corresponding exception under
French law [which notoriously is
also very fond of its moral rights], Article L 122-5 No 4 of the IP Code apodictically states that once a
work has been divulged, the author cannot prevent "La parodie, le
pastiche et la caricature, compte tenu des lois du genre." At
first sight, this wording appears broader than that employed by the new UK
exception.

A matter of integrity?

Furthermore, the changes to the CDPA will have no impact on the law or libel or
slander, and will leave unaffected the regulation of UK moral rights, including
the right of integrity.

The Deckmyn case: the original work ...

Section 80 CDPA provides the author
with the right not to have his/her work [done after 1 August 1989: see Sch 1, para 22(1)] subjected to derogatory treatment, ie any
addition to, deletion from or alteration to or adaptation of the work (other
than literary translations and musical arrangements or transcriptions), that
amounts to distortion or mutilation of the work or is otherwise prejudicial to
his/her honour or reputation.

More often than
not, a parody/caricature/pastiche exception involves a treatment of an earlier
work. And a parody/caricature/pastiche may be prejudicial to the honour or
reputation of the (sensitive) author of the original work.

So, could also moral rights - and
Section 80 CDPA in particular - be used effectively by rightholders to
prevent parodies, caricatures and pastiches they do not like? If so, this would
be indeed the revenge of moral rights in the UK.

... and its spoof

The Deckmyn case

There is
case currently pending before the Court of Justice of the European Union (CJEU)
that is actually about the notion of parody in Article 5(3)(k) of the InfoSoc
Directive. This is Case C-201/13 Deckmyn, a reference for a preliminary ruling
from Belgium.

According to EU Law Radar, the Opinion
of the Advocate General was expected for yesterday, but there is still no sign
of it. The
background issue is whether the right holders to the
well-known [not to this Kat though]Spike
and Suzy[Suske and Wiske] albums can stop a political party from circulating a picture
that spoofs the cover of one of the books, while also reproducing several
elements, including the title, the Spike and Suzy characters, and the use
of the orange colour which was so typical for the covers to the Spike and Suzy
stories.

While waiting to hear from the
CJEU, would a case like the Belgian one be considered fair dealing with the original work under
the new UK exception? Would it be a treatment of the original work that is prejudicial
to the honour or reputation of the original author? What do readers think?

Friday, 28 March 2014

Thank you all so much. Earlier today, the IPKat and Merpel achieved something which they can in all honesty say the wouldn't have been able to do without the valuable assistance and support of their readers: they are proud and not a little humble too when they realise that this weblog has now notched up its nine millionth page-view [or should that be page-mew ...?]. It has been a privilege for us all to work on this weblog and to try to live the IPKat's original motto of "IP news and fun for everyone!"

What is the secret of happiness? Can the answer be online
copyright enforcement? The event of the season, the afternoon everybody has been
waiting for, is just a few days away. On Tuesday 1 April the beautiful London
offices of Bristows LLP will host the IPKat's long-sold-out event ‘Online
Copyright + Enforcement = Happiness?’. If you can't attend but would like to follow
the proceedings, we will be streaming the event live from here. You can also send
comments before, during and after the webcast, by email to online.copyright.katevent@gmail.com
or tweet directly at those speakers who actually happen to have a Twitter
account. Speaking of Twitter, do not forget the hashtag for the day: it's #HappyKat.

Announcing e-LAWnora. Fellow Kat and 1709 Blogger Eleonora Rosati has taken the brave and exciting step of offering her portfolio of copyright-related skills through e-LAWnora, as this Kat mentioned on the 1709 Blog this morning, here. So whatever tasks you need help with -- whether it's bringing yourself, your colleagues and clients up to speed on recent developments, current proposals and future prospects, or getting to grips with a knotty piece of IP research, or any of Eleonora's other services -- remember that e-LAWnora is there to help you.

Around the weblogs. PatLit carries a grand piece by Stefano Barazza on claim preclusion, issue preclusion and the Kessler doctrine. Haven't heard about these choice items? It's time to read, here. The same blog carries a short, short note by Katfriend Paul England on a long, long (yes, Arnoldian) judgment in Starsight v Virgin Media.The jiplp weblog features two recent current intelligence notes: Esther Schnepper reviews the Community trade mark spat between Volvo and Solvo over their similar but non-confusing marks, while AmeriKat Annsley teams up with colleague Paul Keller to write about patent attorney fees in the US in the wake of the Kilopass ruling. Finally, the IP Finance blog gives details of Project Hatchling, an innovation competition backed by Turtle Mat (illustrated, left) for which the prize is, er, the chance to work hard but with a better prospect of success.

What's happening in the wonderful world of ICANN these days? The IPKat and Merpel are happy to leave the answer to this far from rhetorical question in the capable hands of Olivia Gregory, a trade mark assistant at Appleyard Lees, no doubt with a little interference help from former guest Kat Robert Cumming. This is what she tells us:

ICANN Presents ...

Not gTLDs, surely?

The Oscars ceremony might not long be over, but here
in the IP world ICANN, the non-profit organisation responsible for the
administration of the internet, has received over 1,900 nominations for the
long-awaited "gTLD awards". Of the 230 which are contested, 750 applicants
have put on their glitziest dresses in the hope of convincing ICANN that they
deserve the chance to run their own top-level domain. Not everyone can be a
winner. Tears, of sorrow and joy, are inevitable.

Where there are several candidates for the same
gTLD, ICANN places the candidates in a ‘contention set’. This procedure can be
found in the gTLD
Applicant Guidebook. A contention resolution process is outlined, in which preferential
treatment is given to applications with community support. However, the
candidates are largely “encouraged to reach a settlement or agreement among
themselves that resolves the contention” (p 190 of the Guidebook). This vision
is idyllic but, in the words of the European
Commission, it makes
an “artificial assumption that parties are eager to negotiate”. With perfect
plutocratic pandering, when parties can’t or won’t
negotiate, the last resort is to go to auction.

Cue the controversy

There are a couple of big problems here, helpfully
pointed out to ICANN by the European Commission.

No cash, let's bash ...

First, this system is heavily weighted in favour
of the commercial blockbusters who have the deepest pockets. While ICANN keeps
making aspirational statements about encouraging resolution between parties and
promoting diversity and innovation, the systems which have been developed just
don’t deliver these visions. If you have the cash, there is no incentive to
negotiate and nothing in place to make you do so.

The second problem is the auction proceeds. In the
recently published draft
ICANN Auction Rules, a proper breakdown of how auction proceeds are going to be spent is
notably absent. There is a small blurb in thegTLD
Applicant Guidebook (pg 203) on distribution of funds, but there are no clear plans on how
potentially huge sums will be distributed [Merpel has some bright ideas, but these have already sadly fortunately been vetoed].

This scepticism is shared by Esther Dyson, the
founding chairman of ICANN who thinks the new gTLDs are a “waste
of resources” and create nothing; they just divide the existing space into
smaller sections and exploit brandowners’ fear of missing out. They might
“create
jobs, but offer little extra value”.

We still don't know if ICANN will take the European
Commission's comments on board [even though "creating jobs but offering little extra value" is rumoured to be an expertise with which the latter organisation is reputedly familiar]. The lethargic pace of developments so far
indicates that they may not. While most would be more than happy to watch
Hollywood’s elite fight it out for Best Actor (this guest blogger's money would
still be on Matthew McConaughey), it hardly seems appropriate. Nor is it here.

These are
important gTLDs up for grabs -– SHOP, HOME, BOOK and SITE could all potentially
go to auction and there should be an appropriate, fair system in place to make
sure it’s the best candidate who wins. As with many awards ceremonies, the
selection process leaves people scratching their heads. In this case, deep
pockets will prove crucial.

Thanks, Olivia. But what do our readers (many of whom are involved in the process as winners or losers) think?

Merpel was looking forward to a day curling up under the late March sunshine in Lincoln's Inn Fields, but the IPKat has sent her once again to investigate and report the latest news of the worker unrest at the European Patent Office.

Merpel has already reported on the issues at some length here and here, and both posts have attracted a considerable number of comments. Now Merpel has been informed that the EPO figures for the number of people observing the strike were 1,706 people on strike on Friday, 883 on Monday and 994 on Tuesday. This is of course rather less than the 3,697 people who voted for strike action. There seem to be two reasons for this. One is that, as reported in the previous post, Examiners were not going to disrupt public functions such as Oral Proceedings. The other is that, whereas a "yes" vote is secret, striking itself is a rather public act, which some EPO employees may have thought less than career-enhancing.

Moreover yesterday, on Thursday 27 March, EPO employees staged a demonstration at noon in front of the Isar building. Despite frantic googling, Merpel has been unable to find detailed news of this. Did the crowds cross the Ludwigsbrücke? Did they storm the Museumsinsel? We do not know. But she has heard that police estimate the number at around 600, while unofficial estimates may be up to 1,000.

The IPKat does not know enough about the details of the dispute to suggest to the blog readership what they should think, and as a fictional feline his opinions matter little in any case. But he does have some observations, and some further news to share.

It is indisputable that working relations between the President of the EPO and a majority of workers are highly strained

On the other hand, it has been generally agreed for many years that the EPO is in need of some considerable reform. As an extraterritorial organisation, the usual methods of control and oversight are absent. Therefore reform is particularly challenging.

On yet another hand, the usual guarantees of worker rights are also absent because delays at the ILO-AT mean that there is no effective appeal process against unfair dismissal.

On the final hand (luckily the IPKat has four paws), without trust and cooperation between the President and the Employees, successful reform seems highly unlikely.

But, the IPKat hears you cry, what of the Administrative Council? This is made up of independent members from each of the Contracting States, representing the patent office of each. The Administrative Council is there to exercise oversight over the President and the EPO administration, and also it is the Council, not the President directly, that makes so many of the rules complained of.

Well, this is where it gets complicated. Doubtless the President will consider that the fact the Administrative Council is passing many of the reforms complained of demonstrates that it approves of his conduct. Critics of the President point to a different fact, that, on reflection, puts the Administrative Council in a rather difficult (and some say hopelessly compromised) position. The Administrative Council is made up of representatives of national patent offices that are themselves highly reliant on fee income that ultimately derives from the EPO. So as long as the money keeps rolling, they will be encouraged to give the President free rein. The IPKat does not know whether this explains matters, but can see the force of the logic.

Against this background of mistrust, some further news becomes highly relevant. Readers will recall that one of the original PEACES complaints was the new strike regulations in Circular 347, that (apparently -- Merpel has not seen the full document) made it the administration, not the Union or other separate staff body, that conducts strike ballots and determines whether a strike is to be permitted. The "50 email" rule was reportedly developed to prevent unofficial mass communication. Well, now further Circulars are being considered by the Administrative Council that will further decrease the independence of staff representation on the proposed new Staff Committee. The nominations and elections are to be run by the Office, and the nomination provisions state "The President, upon proposal of the Supervisory Committee, shall reject all nominations which do not meet the conditions laid down in the applicable provisions or in the notice of elections..." Thus the administration and the President are intimately involved in the process, which EPO employees says undermines its independence.

In a further draft Circular concerning resources, while it is stated that "The Office shall make premises available to the Staff Committee to set up sufficient working space for Staff Committee members", it is then stated that "Such premises shall not be used for trade union activities". The IPKat wonders therefore where union activities are supposed to take place. Or are they to be banned entirely?

The proposed new voting system has also been criticised - for each Staff Committee (there is a Central one and a Local one at each branch of the Office) each employee gets only one vote, according to the proposal, whereas the Central Committee, for example, has 10 full and 10 alternate members. Allowing only a single vote for a multi-member election will result in highly skewed votes with less popular candidates getting in with very few votes indeed.

Many of the IPKat team represent users of the patent system. Users should be concerned about this degree of unrest.

Finally, Merpel notes that documents from Mr Battistelli repeatedly refer to "social democracy" in relation to the ongoing and proposed reforms. Can anyone tell her what it means?

This is another
note from me on a designs decision. As I write this I’m suffering a cold, so
conveniently this General Court judgment concerns the “notoriously crowded” (to
quote the Board of Appeal), but always warm and inviting, field of radiators.
It is Case T-315/12 Tubes Radiatori v OHIM (Antrax), available only
in French and Italian, so the following is based on a machine translation
(please treat that as a health warning).

Tubes' design

Tubes held a
registered community design (RCD) for the radiator design below (a design for a
“heater for heating”, says my translation. I’ve rotated it 90 degrees so it
fits better on the page and there are other perspectives in the judgment if you
happen to want them).

Antrax (not to be
confused with the acute bacterial disease of similar name) applied to cancel the RCD on the basis that
it lacked individual character (one of two key requirements for validity, along
with novelty – see Articles 5 and 6 of Regulation 6/2002
on Community Designs, the “Regulation”) because it did not produce on
the informed user a different overall impression to two earlier German designs,
one of which is illustrated below (again rotated).

One of the prior designs

Although I thought
you should see them, the designs in suit here do not impact on the General
Court’s decision, which instead turns on the Board of Appeal’s failure to
consider points of law and fact relied upon by Tubes. To make it up to you, I
promise there will be more interesting pictures of, say, cats, along soon.

OHIM’s
Cancellation Division granted the application for invalidity. The Board of
Appeal agreed. As just noted, the General Court decided to annul the Board of
Appeal’s decision, for the reason explained below.

The informed user of radiators

Recalling the
Court of Justice of the European Union’s (CJEU) decision in Case C-281/10 Grupo Promer, the General
Court noted that the informed user (I have quoted Grupo Promer itself, rather than rely on the slightly different
wording my translation gives me in this case):

“must be understood as lying somewhere
between that of the average consumer, applicable in trade mark matters, who
need not have any specific knowledge and who, as a rule, makes no direct
comparison between the trade marks in conflict, and the sectoral expert, who is
an expert with detailed technical expertise.”

The Board of
Appeal found that the informed user here was a person who buys heating
radiators to install them in his or her home. The person is aware of what the
market offers, fashion trends and the characteristics of the basic product. It has also had the opportunity to see and compare different designs in
décor magazines, by visiting specialty shops and by surfing the Internet. The General
Court did not doubt this finding (although why the Board of Appeal keeps trying
to give personality to a legal fiction is beyond me).

Degree of design freedom in a crowded market
need not be limited

In assessing
individual character, the degree of freedom of the designer in developing the design
must be taken into consideration (Article 6(2) of the Regulation). The greater
the freedom, the less likely it would be that small differences between designs
produce a different overall impression on the informed user, and vice versa.
While it might be thought that radiators are fairly boring old functional
things, the Board of Appeal considered that their designers have a relatively
high degree of design freedom. It found that the fact that a radiator needs to
have a bundle of liquid circulating, and heat radiating, tubes does not
significantly affect the shape and the overall appearance of the radiator.
Tubes’ argument to the contrary was not proved on the evidence before the Board
of Appeal.

Tubes was rather
disappointed in this finding, citing an earlier Board of Appeal decision where
it was held that the field of radiators was “notoriously crowded” such that a
designer of radiators had “quite limited” freedom. Noting the importance of
“equal treatment and sound administration”, the General Court nevertheless
stated that each case needed to be considered on its facts, and declined to
criticise the Board of Appeal for reaching two apparently conflicting findings
on design freedom, based as they were on different facts and evidence.

Yet an informed user may pay closer
attention to differences in a crowded market

However, the
General Court did find that in a field crowded with designs, although this did
not suggest a limitation on design freedom, it could well mean that the
informed user would take more notice of differences that he or she might not
notice in the absence of such a crowd.

This blog is "notoriously crowded"with cat pictures. Sorry.

This was Tubes’
breakthrough point. The General Court was satisfied that it had put the crowded
field point to the Cancellation Division, which had drawn conclusions
supporting such crowding. The General Court also noted that despite its
previous decision making the “notoriously crowded” point, and the point having
been argued by Tubes in the appeal, the Board of Appeal failed to address it
(even if only to dismiss it).

With this
omission, the Board of Appeal had failed to substantiate its decision on a
question raised before it relevant to the assessment of individual character
and so, held the General Court, its decision should be annulled.

Back to the Board of Appeal?

There’s nothing in
the General Court’s judgment actually to make this clear, but the case should
now be remitted to the Board of Appeal for it to have another go at it.

The General
Court’s conclusion is an interesting one. But it is reached in a none too
straightforward manner, not least considering the General Court found itself
untroubled by two opposite conclusions about the same field but then
sidestepped the argument entirely to apply the point in question in a different
way. A bit of luck for Tubes perhaps - but more of a wait for both parties
while the previous round of the litigation is repeated.

Regular users of
the Cancellation Division and Boards of Appeal will also know that they
regularly decline to deal with all the arguments put, even when expressly asked
by a party to do so: see Julius Sämann Ltd v Jees SRO, ICD 3630.
Still, it seems unlikely that this ruling will change OHIM’s practice.

Scope of RCD protection

A couple of
additional points to note regarding what is and isn’t protected by an RCD:

·
Tubes sought to rely on photographs of a real
product as a physical embodiment of its RCD. Again following Grupo Promer, the General Court noted
that it was not objectionable in principle for the informed user to be deemed
to take account of a real product built to a design, but added that the burden
of proving that the product corresponded to the design was on the party wishing
to rely on it. Tubes had failed to discharge this burden.

·
Tubes also sought to rely on specific dimensions of
its products but was not permitted to do so: the RCD was not limited to a
particular size product and so only the relative proportions depicted in the
design were relevant.

Thursday, 27 March 2014

Today’s
ruling by the Court of Justice of the European Union (CJEU) in Case C-530/12 P OHIM v National Lottery Commission (plus Advocate General Bot’s
conclusions, here) is about a case with an challenging
background of copyright anticipating famous trade marks, body language and
gambling.
The decisions provides guidelines about the extent to which national law should
be investigated and discussed within an EU proceedings.

In October 2007 the UK National Lottery Commission (NLC) obtained the registration of the Community
trade mark No 4800389
illustrated above, right. A few days
later, the Neapolitan Mediatek Italia Srl and Mr Giuseppe De Gregorio lodged an
application for invalidity under Article 52(2)(c) of Regulation 40/94 [now Article
53(2)(c) of Regulation 207/2009, the CTMR], claiming to
own an earlier copyright in that sign. In support of the claims, they filed an
agreement dated 1986 through which a designer assigned to Mr De Gregorio the
copyright in the crossed fingers sign which appears on the left. Post office stamps on the contract
were there to certify that the agreement was signed, and that the image was created in 1986,
while some invoices allegedly demonstrated that they used it on over 400 t-shirts
in 1988.

NLC bet that the assignment was utterly
unauthentic and observed that the agreement contained two telling inconsistencies.
First, the day shown on the post office stamps was a Sunday, when Italian post
offices are closed. Secondly the agreement stated that the copyright would have
lasted “70 years after” the designer’s death, while the duration in Italy in
1986 was 50 years [it became 70 years in 1996, by virtue of the Copyright Term Directive].
Instead of admiring this prophetic view of European copyright law,
NLC asked the OHIM to open an investigation phase in order to verify the authenticity of
the original 1986 contract.

The applicants for invalidity replied that those inconsistencies were nothing but irrelevant errors and that, in any case, the probative rules
of Italian Civil Code [applicable under Article 53(2)(c) CTMR] would
have prevented a public authority like OHIM from disregarding the content and
the date of 1986 agreement unless it was challenged as a forgery before the
Italian courts. On the
basis of this submission, both the Opposition Division and the Board
of Appeal ruled that, under Italian Law, the 1986 agreement constituted full
proof of the provenance of the agreement and of the date thereof, pending a
declaration of forgery. Further, they concluded that the anomalies referred to
by NLC gave no grounds for doubting the veracity of the content of the 1986
agreement and that, therefore, the NLC’s trade mark was to be annulled.

NLC's reaction, in thelanguage of the proceedings

The General
Court (GC) however took a different view in Case T-404/10. First, it stated that the Board of Appeal
should have obtained information about the national law of the Member State
concerned for the purposes of assessing the accuracy of the parties’ national
law interpretation “of its own motion and by whatever means considered
appropriate”, being such information ‘well-known facts’ [that is to say, “facts which are likely to be
known by anyone or which may be learnt from generally accessible sources”]. That being said and done, the GC performed its own diligent research, finding out that Italian
Civil Code allowed the 1986 agreement to be freely contestedin court. Key to its conclusion was a 2007 Italian Supreme Court decision stating
that dates reported on post office prints do not constitute full proof and can be
disregarded even without instituting forgery proceedings. Accordingly, the GC set aside OHIM’s decisions.

OHIM and
the Neapolitan guys appealed, claiming that GC’s ex officio investigations into Italian law and case law violated
their right to be heard. In particular, they maintained that national law and
case law were to be considered as “purely factual matter” and that the GC should
have relied upon the parties’ allegation in this regard instead of performing
its own searches.

National
law is not just a matter of fact, the CJEU said in today’s decision, but the GC
should have paid more attention to the parties’ right to be heard.

First, the
CJEU stated that national law and its interpretationshall not be regarded as “a purely factual
matter” to be merely established on the basis of the evidence produced by the
parties. On one side, Rule 37 of the CTMR Implementing Regulation imposes on the claimant for invalidity the burden of providing "OHIM not only with particulars showing that he satisfies the necessary conditions ... in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right" under national law, "but also particulars establishing the content of that law". Both OHIM bodies and GC, however, have a duty to conduct a full
review of the national law particulars submitted by parties, obtaining information
about the national law of the Member State concerned on their own motion for
the purposes of assessing the accuracy of the facts adduced or the probative value
of the documents submitted [Edwin v OHIM,
Case
C‑263/09 P], as the GC did by looking
through Italian law and case law on probative value of the 1986 agreement.

On the other
hand, however, the CJEU observed that the parties did not have the opportunity
to be heard on the 2007 Italian Supreme Court decision that was crucial to the GC’s
reasoning. Accordingly, the Court remitted the case to the CG for a ruling on the merits of the action in
light of fair trial principles.

Now, this
Kat is utterly confused. Since when he was a young student, he has been told
that, as reflection of the “iura
novit curia” principle [“the court knows the law", as explained here], judges
are perfectly free to search and select law and case law to be mentioned in their decisions, no matter if they were discussed with lawyers during the proceedings
[they should know
the law as well!]. Since this is not apparently so, the IPKat suggests that both
parties to these proceedings hire an Italian consultant for the next phase before
the GC [Merpel has
got some valuable names up her sleeve, if they want them ...].

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